Career in Patents Law: Various Patenty Options and the Art & ‘Science’ of It

May 19, 2015

By Dinesh Jotwani, Patent Attorney and IPR Faculty, IALM.

Being an Indian Lawyer and Patent Attorney for nearly two decades, my young friends in Legal fraternity often ask me the scope in of pursuing a career in Patents. There are both, misconceptions and rumors, surrounding the issue.

Unfortunately young lawyers and law students often shun this important career path and believe that Patents as a career is for ‘Technologists’ and ‘Scientists’.

Nothing can be more fallacious and at outset let me bat for Lawyers being the finest Patent Attorneys and Agents.

This misconception arises from two things:

1) Lawyers will not be able to understand the technology; and

2) The Indian Patent Act prohibits unregistered persons to practice patents – and for registration you need to have science education upto 15-years. To be fair, both the arguments are true to some extent. However, those who only argue on these points do not fully appreciate the length, breath, depth and scope of the career in Patents.

Based on above two reasons, many bright law students, not only do away with studying Patents, but also with career in Intellectual Property Rights (IPRs).

They feel that Patents are important and integral part of IPRs, and therefore they will not be able to succeed in IPRs. We will closely look at both the above arguments, but let’s start with some typical Patent related job-profiles available in Indian market.

• Patent Analyst: Patent Analyst provide us with deep information about infringement and competitive landscape analysis of Inventions and Patents.

• Prior Art, Landscape and Freedom to Operate Studies: These experts are required in organizations to advice on whether to file a patent, or to start R&D on a new product, or to launch a product in a new territory/ market. With their studies and reports, these experts help save a lot of time and money for organizations.

• Patent Valuers: These experts assess the market value of a Patent based on several financial valuation models. Very useful during mergers, acquisitions, bank loans and preparing balance sheets.

• Due Diligence Professionals: Mostly outside consultants, they assists in due diligence of assets during mergers, acquisitions and takeovers.

• Patent Prosecution: The prosecutors liaise with local Patent Offices and are instrumental in registration of Patent Applications.

• Patent Litigation: They are lawyers who argue Patent Cases in a Court of Law and seek injunctions or defend their clients.

• Patent Portfolio Managers: The Managers are responsible for managing huge patent portfolio for organizations. They have to strategically manage patent assets that are spread across several jurisdiction, and are at different stages of prosecution or enforcement.

• In-House Patent Counsels: They are integral part of any organization and are responsible for growth of Innovation, filtering of patentable ideas, managing law firms for prosecution and also for ultimate enforcement of IPR rights.

• Patent Licensing Specialist: These specialists are responsible for both Inbound and Outbound Licensing. Like sales team, they have to meet revenue targets for organization and are responsible for P&L.

• Patent Legal Process Outsourcing (LPOs): As the costs of preparing, filing, prosecuting and maintaining patents have become extremely high in the Western World, it resulted in mushrooming of several Patent LPOs in India. These LPOs provide us with huge global market to work with, high salaries, and also opportunities to work for Fortune 500 companies.

A Scientific Passion

Above is not an exhaustive list of Patent related opportunities. And let me assure that Lawyers, MBAs and Chartered Accountants, who are technologically savvy can avail most (if not all) kinds of the opportunities.

No doubt, Patents protect new inventions and innovations of highest complexity.

A patent document (called specifications) protects the works by Engineers and Scientist. As we know that a Patent is valid for 20 years, hence by definition, a Patent requires understanding of new and modern technology, sciences and know-hows. Hence, a Patent Attorney should have deep understanding of the domain.

However, I also believe that understanding, passion and love for technology is more important than a mere degree qualification. In any case today’s education degrees become outdated in less than a decade, and we all are required to keep ourselves updated.

Similarly, the prohibition under Indian Patent Act is restricted to practice before the Patent Office only. Whether lawyers can appear before Patent Examiners at Patent Office is still unclear in India, as the matter remains sub-judice. The author knows several successful lawyers who are flourishing without having a formal science degree or being formally registered as Patent Agent.

These professionals have thrived on the basis of knowledge and understanding of their clients business and technological space they work in. Infact drafting Claims (the most important part of the application) without legal inputs is fraught and could lead to loosing away of valuable rights.

Money Matters

Finally, I must also encourage young Lawyers and Law Students by informing that Patent work has emerged as a highest paying work in United States of America, with lawyers charging between US $500 to US $ 1500 an hour.

Obtaining one patent (and a technology company files hundreds of patents each year) could costs anything between US $ 5000/- to US $ 15000/-, depending on the complexity of technology. In India, the costs of obtaining each patent ranges from Rs. 75000/- to Rs. 200,000/-.

With India becoming hub of startsups and R&D centers as well as big potential market for products of MNCs, a career option in Patents cannot (and should not) be ignored by Lawyers. I wish you all the best for your future career and prospects.

Dinesh Jotwani is a Patent Attorney and IPR Faculty at Indian Academy of Law & Management (www.ialm.academy). These are author’s personal views and are not reflective of any organizational viewpoint.

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